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Wednesday, 27 August 2014

I still haven't got my head round the proposed directive on the protection of trade secrets. I thought there wouldn't be much exciting in it - but whether that turns out to be a fair assessment or not, there is a lot in Max Planck's comments on it to excite me. (Yes, I know they are not actually Max Planck's comments - see the entry in my Dictionary about the institute, or more accurately institutes as there are as many as 80 of them under the auspices of the Max Panck Gesselschaft) named after the man, and indeed the entry in it for the man himself.) What excites me is the suggestion that the directive should extend protection to prevent reverse engineering.
What? This is the most outrageously protectionist idea I can recall ever hearing of. The MPI has often struck me as viewing intellectual property as a Good Thing without considering whether a lack of protection might be a better thing. So the Institute says:

The use without restrictions of trade secrets obtained through
reverse engineering appears problematic, in particular in sectors where –
other than in the case of software – no intellectual property
protection is available, although considerable investments are made in
the development of new products. Notable examples
include the cosmetic industry, which regularly invests quite heavily in
the development of perfumes, but where the know-how generated thereby
can be decoded with relative ease through reverse engineering.

The unrestricted use of such know-how raises concerns that it could
pose a substantial threat to the companies concerned, eventually leading
to market failure whereby such goods would no longer be produced.
Accordingly, it must be assessed whether the existing (quite
problematic) prohibition on advertising such products as imitations or
replicas should be replaced by other measures that are directly aimed at
protecting the relevant interests.

Perfumes? What a lousy example to use. As Ian Connor of Pinsent Mason says in Out-Law's commentary on the MPI paper, the evidence in the smell-alike cases showed that it was impossible to achieve an identical fragrance by reverse-engineering (and the fact that a cheap imitation couldn't use the expensive ingredients no doubt contributes to that). If there is an element of unfair competition in imitating fragrances, then it has to be dealt with as unfair competition: for goodness sake, don't try to bring trade secrets law to bear on it. In so far as trade mark law is part of the law of unfair competition, that approach has been tried, but just because it has failed doesn't mean that we need to try something else. And just because something isn't protected doesn't mean that there is a hole in the system that needs to be repaired.

I first encountered the idea of reverse-engineering in the context of the good old Morris Marina exhaust pipe - in other words, in the dispute that eventually gave us BL v Armstrong. Copyright was used to try to stop reverse engineering, because (unlike a smell-alike) you could make a perfectly serviceable and accurate copy of an exhaust pipe by measuring the relevant dimensions. Did the House of Lords say "oh, here's something that isn't protected, let's see if we can find a way to make the law apply?" Not at all. In fact the starting point was the opposite: here was something that copyright did protect, even against reverse engineering, and their Lordships were pretty clear that they thought this was wrong. (Lord Templemann and Lord Bridge, as I recall, to the fore: two judges who for several years resisted every attempt to expand the scope of intellectual property protection, whether in exhaust pipes, bottle shapes (as trade marks: Re Coca-Cola), sound recordings (CBS Songs v Amstrad), plastic toy bricks (Lego v Tyco), or television show formats (Green v Broadcasting Corporation of New Zealand). The majority in the House of Lords (Lord Griffith going about it in a different way, if I remember correctly) resolved the problem in the consumer's favour by reference to the "non-derogation from grant" principle known to landlord and tenant law - an even more egregious example, it has to be said, of using one law to solve a deficiency in another than the MPI's wish to use trade secrets law to solve an unfair competition problem.

The law should only give protection where there is a good reason for it. That, I think, is the "evidence-based policy-making" that Hargreaves was so keen on, and which the government seems to have forgotten about even before the ink was dry on the Professor's work (hence the increase in copyright term for sound recordings, and perhaps likewise the latest bunch of copyright "exceptions", or permitted acts as they ought properly to be called). There are limits to intellectual property protection for good reason. Some matter remains unprotected deliberately - for the simple reason that there is no justification for protecting it. There would be no incentive for anyone to do anything that they were not already doing, just a supernormal profit to be taken at the expense of the consumer. Consumer welfare in the strict economic sense is not the be-all and end-all of the matter: when you analyse this stuff as property, human rights become engaged, and a property owner should not lightly be deprived of it. But in the case of reverse engineering we are talking about matter which is not protected by property rights, and which is in the public domain where anyone can use it. It is not confidential, and to impose a confidentiality-style obligation on would-be users would be a huge retrograde step and one that takes absolutism in intellectual property to new heights.

Tuesday, 26 August 2014

The Government of India, vide its notification
dated 1st August 2014 has amended the existing Trademark Rules,
2002, and the amended Rules are now referred to as the ‘Trade marks (Amendment) Rules, 2014’. The proposed amendments were
initially notified and made available to public on 26th August 2013 inviting
objection and suggestions from the public likely to be affected. Since, no
objections or suggestions were received by the Govt. of India the proposed
amendment were accepted and subsequently notified.

The salient features of the ‘Trade marks (Amendment) Rules 2014’ are:

The official filing fees for filing a trademark application in one class
has been increased from INR ‘3,500.00’ to INR ‘4,000.00;
and;

The official fees to expedite the examination of an application for the
registration of a trademark, has been increased from INR ‘12,500.00’to INR
‘20,000.00’.

It may be pertinent to note that during the
Trademarks (Second Amendment) Rules, 2010, the application fee was increased
from INR 2,500.00 to INR 3,500.00, however the fee for filing an application
for expediting the examination which should have been proportionately increased
five times of the application fee (INR 17,500.00), was inadvertently missed out
which lead to a great confusion and until the latest notification it was not
clear whether the fee was five times of filing fee i.e. INR 17,500.or INR
12,500.00 as mentioned in first schedule of the Trademark Rules.

Therefore, it may be seen that the current
amendment is also to rectify the earlier mistake.

Since the notification came to effect since August
1st 2014, the Controller General of Patents, Designs &
Trademarks, India issued a public notice dated 7th August 2014 stating
that any applicant/agent who has filed the application on or after 1st
August 2014 and not paid the revised fee, shall have time until 30th
September 2014 to pay the balance fee failing which the application shall not be
processed.

It may further be noted that if the balance fee is not
paid within the afore-mentioned date, the filing date shall shift to the date
of actual payment of the balance fees. Needless to mention that the date of
filing an application is crucial, however, it is further important that if the
application has priority of a convention application, paying the balance fee on
or before due date becomes more crucial.

It may be noted that only as recent as 2010, the
Government amended the official filing fees from 2,500.00 to 3,500.00, therefore,
this increase by the Government can only be seen as a measure for the Trademark
Office to increase their resources to ensure the long pending backlogs of
applications are expedited, and on the other hand to ensure that the applicants
choose their trademarks more wisely, before filing the same and to further lessen
frivolous applications.

Sunday, 10 August 2014

SEQ Legal seems to have a lot of useful stuff - including this piece on software SLAs which I am bookmarking for future reference, and sharing with my readers in case any of you (either of you?) are interested.

The Observer
reports a copyright case over the design of the iconic jumper worn by
Danish TV detective Sarah Lund (actress Sofie Gråbøl) which the Faroe
Islands-based manufacturer has lost. The court took the view that the
design was a traditional pattern hundreds of years old. That sounds
quite plausible: I don't know what evidence might have been offered, but
to claim that the design is an original one is a bit of a stretch.

The
report digresses into a discussion of a report in Vogue on Fair Isle
sweaters, which in fact are a completely different matter (by
definition, multi-coloured). And then, incredibly, the paper places the
Faroes equidistant from Scotland, Iceland and Denmark: two-thirds
correct, but where do they think Denmark is? Or have they forgotten that
Norway is no longer part of Denmark (and hasn't been since 1814).
Moreover, since the Faroes are part of the Kingdom of Denmark, it is
pretty pointless measuring the distance between the two - rather like
asking how far it is from Scotland to the United Kingdom (pending the
forthcoming referendum, of course).

Friday, 8 August 2014

The European e-Justice Portal sets out details of a newly-devised method of citation which I suspect will become important in the future. It explains how it works, in the process exposing the imperialism which lies at the heart, it seems, of everything the European Union does - this is not a European case law identifier, nor is the e-Justice Portal a European thing: Europe is a continent, and the legal entity with which we are concerned here is the European Union. I remain surprised that Mr Putin has not taken violent exception to these frequent attempts to apostrophise his country. (The Swiss, Norwegians and others might be expected to take less violent exception.) More to the point: lawyers work all the time with words, and giving them precise meanings (and using those precise meanings correctly) is key to our work. How on earth can we tolerate this sloppy usage of a geographical term to identify a smaller political unit? Yet every time a lawyer refers to the European Court of Justice they commit this cardinal sin.

Anyway, back to the citation system. Here's what it says:

ECLI is a uniform identifier that has the same recognizable format
for all Member States and EU courts. It is composed of five, mandatory,
elements:

‘ECLI’: to identify the identifier as being a European Case Law Identifier;

the country code;

the code of the court that rendered the judgment;

the year the judgment was rendered;

an ordinal number, up to 25 alphanumeric characters, in a format that
is decided upon by each Member State. Dots are allowed, but not other
punctuation marks.

The elements are separated by a colon.

It gives a non-existent example of an ECLI. More useful would be to give a real one. How about ECLI:UK:SC:2013:18. Case number 18 of 2013 in the court formerly known as the House of Lords, or SCOTUK as we might call it, taking a leaf out of the American book (and perhaps demonstrating suitable contempt for New Labour's wanton destruction of tradition - but I digress). That would be Meltwater. I note that BAILII does not seem to have adopted the 'European' approach yet.

Mallesons' excellent IP Whiteboard blog tells us that BP last month lost its latest attempt to register a shade of green, identified as Pantone (R) 348C, as a trade mark in Australia, there being no evidence to show that consumers identified the source of the goods from the colour alone. Being embroiled myself in opposition proceedings, where a client has fallen foul of another company's sweeping colour trade mark registration, I wish we took a similar approach in Europe: without added matter, a colour trade mark should be registered only if it constitutes the brand (Orange, for example), not just an ancillary part of it. Of course it may be that in the UK BP meet this requirement, but there are other colour trade marks that don't come close and which therefore constitute unjustified monopolies, and insurmountable barriers to entry for overseas businesses trying to enter the UK market.

The Intellectual Property Act 2014 (Commencement No. 2) Order 2014 brought section 23 of the Act into operation, from 1 August. Section 23 is not a substantive provision: it merely contains power for the Secretary of State to make consequential or transitional provisions in connection with the Intellectual Property Act 2014. But a great deal of mischief could follow!

The Legislative Reform (Patents) Order 2014 introduces an exception into our patent law for acts done for certain purposes connected with obtaining marketing authorisation for pharmaceuticals. This is basically what has existed in US law for some time, where it is called the Bolar exception: if you haven't already bought a copy of my Dictionary of Intellectual Property Law, get one now to read the definition! We now have new subsections 60(6D) to (6G) in the Patents Act 1977 (or to be more precise we will have from 1 October, when the change comes into operation).

Thursday, 7 August 2014

The case reinforces what we probably all know - leaving your trade mark unprotected, enabling an opportunist to get in first and register it, can be an expensive mistake. Unfortunately, registering all the trade marks you might need is also expensive. Interesting, however, to note that the squatting problem has moved from the field of domain names (a few pence each) to trade marks (several hundreds of pounds each, at least). And while trade mark laws commonly contain use and good faith requirements, they are not cheap and easy to invoke.

Friday, 1 August 2014

No report on BAILII or elsewhere yet but the Telegraph reports
that the High Court (Birss J) has held that the American company
infringed the shirtmaker's CTM. Pink v Pink for very similar goods -
with evidence of customers trying to return the defendant's products to
the claimant's shops - should be an open-and-shut case. What's hard to
understand is how the defendants could have imagined it was a good idea
to try to come to Europe with a trade mark that so clearly conflicted
with an existing one - did they think their product was sufficiently
different, or did they just not do a clearance search? Or is it just
arrogance, of which there is too much in the trade mark world?Thomas Pink Ltd v Victoria's Secret UK Ltd [2014] EWHC 2631 (Ch)

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LEGALS

This blawg reflects my own opinions (or those of named contributors) and not those of CJ Jones Solicitors LLP or anyone else to whom they might be attributed. Nothing in this blawg is intended as legal advice, which is what I sell to make a living: if you are in need of advice you should consult someone suitably qualified to assist you. If you care to consult me, of course, I would be delighted.Published by Motor Law Publications Limited, which is the owner of the UK registered trade mark IPso Jure.